In Andy Warhol Foundation for the Visual Arts Inc. v. Goldsmith, the Second Circuit sought to clarify our understanding of fair use, and especially transformative use of photos of the rockstar Prince, as interpreted (or copied) by Andy Warhol.
The appellate court reversed a decision rendered by the Southern District of New York. The Andy Warhol Foundation for the Visual Arts had filed for a declaratory judgment against photographer Lynn Goldsmith after she expressed opposition to Warhol’s use of her photographs.
The photograph in question has an intriguing back story. Taken in Goldsmith’s New York studio, she made artistic choices about how to light the scene and get an expression of Prince that appeared vulnerable. According to Goldsmith, the photoshoot had gone awry somewhere after the 17th exposure. Evidently, Prince locked himself in the wardrobe room, and soon left the studio. After she finished the prints of Prince, the agency that licensed her works offered an “artist’s reference” license to an undisclosed publisher, which allowed the licensed work to be used as a basis for making another work.
Vanity Fair was the undisclosed party who bought such a license for one of the Goldsmith photographs, enabling Andy Warhol to use Goldsmith’s photograph of Prince for a single silkscreen for use by the magazine. However, unbeknownst to Goldsmith (and at the time, to Vanity Fair), Warhol made a series of the silkscreens.
What Goldsmith didn’t know — and didn’t find out until after Prince had died — is that Vanity Fair had re-hired the Warhol Foundation to use 15 other works from the series Warhol made. Those works, too, were based on the original photograph, and Vanity Fair did not credit Goldsmith (or hire her for its posthumous retrospective of the rock star). The court had to determine whether the silkscreens were unauthorized derivatives or new works that “transformed” the photograph.
The Second Circuit held that it’s not enough to say that a secondary work — which doesn’t make obvious commentary on the earlier work — makes a higher or different artistic use that automatically makes the newer work transformative. As an example, the court examined a hypothetical movie based on a novel. The movie almost always changes plot elements and timing from the novel. It expounds on different characters, it eliminates different characters, but it’s still a derivative work of the novel, even if it is expressed differently. The district court had made an error by saying that Warhol’s remakes of the Prince photo transformed Prince from a vulnerable, uncomfortable person to an iconic larger-than-life figure.
That is, whether work is transformative can’t turn merely on the perceived intent of the artists. There has to be some alteration to any work for it to be deemed transformative. Rather, the judge must examine whether the secondary work’s use of the source material is a fundamentally different and new artistic purpose where the secondary work stands apart from the so-called raw material use created. Looking at the Goldsmith and Warhol works side by side, the court said the Warhol series is not transformative.
The transformative work must comprise something more than just imposing the second artist’s style on the original artist’s work. It has to add something. There’s no real way to dispute that the purpose and function of the two works is to portray the same person. The Warhols are much closer to presenting the same work in a different form: high-contrast screen prints. The new format doesn’t make it transformative.
Crucially, the court added that the Warhol works retain the essential elements of the Goldsmith photograph without significantly adding to or altering those elements, down to the glimmer of the umbrella lights that can be seen in Prince’s eye. Even if the works in this case are easily recognizable as works by Warhol, the court made clear that we can’t entertain that view because it would immediately create a celebrity plagiarist privilege. That is, the more established the artist and the more distinctive the artist’s style, the greater leeway that artist would have to pilfer the creative labors of others.
Among the factors of fair use, the court noted that Warhol’s silkscreens did have the effect of usurping the market for the Goldsmith’s photograph by offering a competing substitute. This was in contrast to the district court’s ruling, which alleged that the market for Goldsmith’s original image would not be affected. (Interestingly, the district court put the burden of proof of demonstrating the market impact onto the photographers. Which to me, sounds like blaming the victim.)
The Second Circuit vacated the district court’s granting of declaratory judgment and found in favor of Goldsmith in her counterclaim of infringement. In two concurring opinions, the additional justices agreed with the outcome, but said the most important factor has always been whether the market for the infringed work is “usurped” by the infringing work. In the concurring Justices’ viewpoint, that is more important than whether the work is transformative.
Lynn Goldsmith could not have asked for a more favorable posture from which to sue, and yet the district court didn’t see it. Perhaps the judge was blinded by the style and notoriety of Warhol — or perhaps “transformative” was too mushy a concept to apply properly. We’ll see whether this appellate decision adds clarity and better predictability to future cases.
Mark S. Kaufman
Kaufman & Kahn
kaufman@kaufmankahn.com
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